Monday, May 20, 2013

McCarthy has said that there’s “surprisingly little” case
law on whether a fictional company or product using the same name/brand as a
real one constitutes trademark infringement.If this is surprising, as the court here agreed, it’s only because we’ve
started expecting overreach as a baseline.This case adds to the small but obviously correct body of case law
rejecting such claims (and, I hope, putting defendants in a position to ask for
an award of fees next time).

Fortres Grand makes a real software program, Clean
Slate.Clean Slate erases evidence of
user activity on a particular computer, and it’s a registered mark for
“computer software used to protect public access computers by scouring the
computer drive back to its original configuration upon reboot.”

The Dark Knight Rises
included a handful of references to a fictional software program called “clean
slate,” which Selina Kyle wanted to erase her criminal history from every
computer database in the world. (Yet
another example of ridiculous tech premises; see also Carrion on Revenge, the Machine on Person of Interest, “Let’s Enhance,” and Phone Trace
Race (warning: this last link goes to TVTropes; I am not responsible for
the time you waste if you follow it).)Also, WB created two relevant websites, rykindata.com and
rykindata.tumblr.com, to promote the film. (Ed. note: Eric Goldman says keyword
ad cases make no business sense; this tumblr has 5 entries, and the top
one—featuring Selina Kyle—has only 94 reblogs/likes, whereas the others have
11, 4 (one of which is me), and none. Perhaps this also wasn’t worth suing
over?) As the court explained, the sites
served to extend the movie experience:

[R]ather than just creating a
straightforward promotional website where consumers can get information about
the film (like, in this instance, www.thedarkknightrises.com), additional
websites are created that market the film in a more subtle or creative way. In
this instance, the websites are essentially a creative outgrowth of the
fictional world of the film. They look like what a (fictional) citizen of
Gotham might find if they were looking for information on the (fictional) Rykin
Data company. They include images of fictional police reports related to the
fictional character Selina Kyle, a fictional police file labeled “Cat Burglar
Investigation,” a fictitious software patent, and an endorsement from a
fictional Gotham City Better Business Bureau (BBB). [Hilariously/sadly, this
last seems to have been removed, perhaps when counsel got a better look at the
tumblr because of this suit.]

These websites also use the term
“clean slate” to describe the software referenced in the film. … One of the
pages on the website is titled “PROGRAM:
‘CLEAN SLATE’” and explains that “‘Clean Slate’ is the informal name for
Rykin Data’s primary service, in which the corporation will amass personal
histories (specifically off the Internet) and destroy it permanently.” Both
websites also contain a fictitious
patent for the software, the abstract of which states that the invention
has the effect of “granting the subject a clean slate within the digital
world.” The Tumblr site also contains this statement: “Rykin Data: Providing
Fresh Starts since 2004. . . . Clean slates are possible. . . . Have a fresh,
clean start.”

The court considered these materials on the motion to dismiss
because they were integral to the complaint.

Fortres Grand sued for trademark infringement and unfair
competition under state and federal law; all the claims were subject to the
same standard.It claimed reverse
confusion.

The court began by noting what trademark law isn’t about: “trademark
infringement protects only against mistaken purchasing decisions and not
against confusion generally.” To prevail, Fortres Grand needed to plausibly
allege that Warner Bros. saturated the market with a product that the public
was deceived into believing emanates from, was connected to, or was sponsored
by Fortres Grand.The fatal flaw in the
case involved correctly identifying “the exact product that Warner Bros. has
introduced to the market – a film, not a piece of software.”Paradigm reverse confusion cases involve
directly competing products where a small regional producer is overwhelmed when
a larger player “rolls out a similar product with the same trademark on a
nationwide level.”

But Warner Bros. didn’t have real “clean slate”
software.Fortres Grand couldn’t argue
that it had been damaged by the saturation of the market with “clean slate”
software.Confusion had to be judged by
Warner Bros.’ actual product, as other courts in similar situations have also
ruled.See Ocean Bio-Chem, Inc. v.
Turner Network Television, Inc., 741 F. Supp. 1546 (S.D. Fla. 1990) (Star Brite
Distributing had no claim against fictional Starbrite Batteries); Davis v. Walt
Disney Co., 430 F.3d 901 (8th Cir. 2005) (Earth Protector advocacy organization
had no claim against fictional environmental software company Earth
Protectors); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D.
Ill. 2003) (no consumer would be more likely to buy or watch George of the Jungle 2 because of any
mistaken belief, based on presence of Caterpillar vehicles in the movie, that
Caterpillar sponsored it).

Fortres Grand couldn’t plausibly allege either that
consumers were deceived into believing that the DKR “clean slate” program came from Fortres Grand, or that they
were deceived into believing that DKR
came from Fortres Grand.

“First, no consumer – reasonable or otherwise – can believe
the fictional ‘clean slate’ software in the movie emanates from, is sponsored
by, or connected to Fortres Grand because the fictional software does not exist
in reality.” A consumer who tried to find it would quickly discover that it
didn’t exist.In other words, Warner
Bros. was not making a trademark use of “clean slate”: it didn’t identify a
source of software because there was no such software, and it didn’t identify
the source of the film either (citing, inter alia, New Kids).

“Second, no consumer – reasonable or even unreasonable –
would believe that the The Dark Knight
Rises itself is connected to Fortres Grand.”Fortres Grand isn’t in the motion picture
business, and no one would buy tickets or discs because of a perceived
association with Fortres Grand’s products.Any allegation of confusion about the film’s source would be too
implausible to survive Iqbal/Twombly.
(Notice
how sponsorship/product placement has been erased from the analysis.Really, the only coherent way to understand
these statements is as normative claims, irrefutable by empirical evidence,
rather than as descriptive claims.)The
promo websites changed nothing. “To the extent it can be said that the term
‘clean slate’ on these sites is even being used as a trademark, it can only be
to indicate the source or origin for the film The Dark Knight Rises.”

Mark McKenna will appreciate this bit:Pragmatically, infringement means confusion
as to source, which means origin, which means “the producer of the tangible
product sold in the marketplace.” Hello, Dastar!
Vague, generalized confusion isn’t enough, since the key target is mistaken purchasing
decisions.Because “no one looking for
Fortres Grand’s software is likely to mistakenly buy a ticket to The Dark Knight Rises,” there was no
plausible claim for such mistakes.

And also: the use of “clean slate” was protected by the
First Amendment, even if there were potential consumer confusion. Rogers v. Grimaldi, 875 F.2d 994 (2d
Cir. 1989), provided the standard.The
Lanham Act doesn’t apply to artistic works as long as a use is artistically
relevant and not explicitly misleading as to the source or content of the
work.Rogers is about titles, but also applies to the use of a mark in
the body of a work.

The first prong, artistic relevance, is a purposely low
threshold.“Clean slate” had artistic
relevance to both the film and the websites, as Fortres Grand’s own complaint
acknowledged—it was the name of a program that would erase a person’s criminal
history from every computer database.Nor was the use explicitly misleading.As the 9th Circuit has (confusingly) said, “the relevant
question” is whether the use of “clean slate” in The Dark Knight Rises would confuse its viewers into thinking that
the Fortres Grand “is somehow behind” the film or “that it sponsors” the film. The requirement of explicit misleadingness makes this a high bar: a work must make
some affirmative statement of sponsorship or endorsement, beyond the mere use
of a plaintiff’s mark, in order to be explicitly misleading.There was no such affirmative statement here.

The court rejected Fortres Grand’s argument that Rogers only applies to forward
confusion, not reverse confusion, because Rogers
was about protecting use of “culturally relevant” marks.Because Warner Bros. wasn’t trying to refer
to Fortres Grand at all, it argued, Rogers
wasn’t relevant. The court didn’t see the logic there.First Amendment protection didn’t depend on
the infringer’s having “some well-thought-out, ‘expressive’ critique of the
trademark.”In fact, the chilling effect
of Fortres Grand’s position could be huge.Small, relatively unknown trademark owners shouldn’t enjoy monopoly
power over use of words in expressive works any more than the owners of famous
marks should.Other courts had concluded
similarly; the one case that supported Fortres Grand, Rebelution, LLC
v. Perez, 732 F. Supp. 2d 883 (N.D. Cal. 2010), read “artistic relevance” too
narrowly, requiring defendant’s use “to be with reference to the meaning
associated with plaintiff’s mark.” As
the Ninth Circuit has held, “the level of relevance merely must be above zero”
(and, implicitly, “relevance” means “relevance to the work,” not “relevance to
the plaintiff”—which is the only sensible reading; otherwise the reality show Apple Pickers about competing fruit
sellers would be vulnerable to a claim from Apple, whose computers would lack
artistic relevance to the show).

The same analysis applied to the promotional websites.Fortres Grand argued that Rogers didn’t apply because the sites
were commercial speech, but they weren’t, in that they did more than propose a
commercial transaction.“[I]n fact, it
is hard to see that they really propose any commercial transaction, other than
obliquely convincing consumers to buy a ticket to the film. Instead, they are
creative, fictional extensions of the film – artistic works in and of
themselves – and are thus entitled to First Amendment protection.”Rogers
applied in the same way.

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